Does your business have brand protection?

17th November 2015

Your business brand is extremely valuable. Not only does it make you stand out from the crowd, it can be capitalised upon and become a financial asset in itself. As such, it is important to know how to protect it as much as possible – and make the most out of it.

Martin de Ridder, solicitor in the dispute resolution team at Ansons Solicitors in Staffordshire, offers some expert legal advice on creating a brand, securing and strengthening it, as well as how it can be used and enforced.

Initial considerations

Many elements of a brand can be protected as intellectual property rights. These are legal rights that apply to creative work, which can prevent copying and unauthorised third party use.

Take legal advice early on in the creative process to ensure what is created can be protected and does not infringe other people’s brands or other rights. Make sure third parties, such as brand consultants or advertising agencies, sign confidentiality agreements and transfer rights in their creative output to the business. For instance, copyright.

Carry out internet searches to check that the brand is not already being used by another company. Instruct a law firm or a trademark attorney to conduct further searches of the relevant registries if necessary.

Also keep accurate records of the development process and date stamp these documents. This will help the business provide evidence if any infringement claim is brought against it. For example, evidence that it was created as part of an original process rather than copied.

Legal protection

A business can use legal rights to protect its brand value, including:

  • copyright, which applies to original work such as creative or artistic output including a piece of writing, music, photograph, software or video clip. It provides automatic protection to original work against other people copying the work without permission; and
  • trademark rights, which arise through registration or use in a commercial context, and can protect brand elements such as logos, slogans and colours.

Registration: why and where?

Some elements of a brand can get greater protection if they are registered, such as a registered trademark. Applications to register these rights will be tested, among other things, on their merits and against existing third party rights. In the case of trademarks, this includes a consideration of whether the mark is distinctive.

Registration gives a business the exclusive right to use the trademark as registered and enforce that right against anyone using it without the business’ permission. Unregistered rights are similar but are harder to enforce and protect. For example, for an unregistered trademark, a business will have to prove that it has the goodwill in the mark, which can be very difficult and expensive to establish.

Registration makes enforcement a lot easier but it may be costly and time-consuming. The business will also need to consider whether to register on a national or cross-border basis. For example, across the European Union. The issues are complex, so take legal advice beforehand.

Using a brand

Once a brand has been created and protected, it is important that the business uses it consistently and does nothing that could lose its protection. This can be done by:

  • drawing up or reviewing existing brand guidelines, which should include clear rules on how the brand must be used throughout the business;
  • strictly enforcing brand guidelines internally and externally to build up the brand, its market presence and therefore its value;
  • taking note of minor changes in the way a brand is used, for example font or colour. These can create a new right that will need to be protected in addition to the rights the business already has. Costs of protection, such as registration fees, can quickly mount up if a business has lots of different variations of a brand;
  • using copyright notices, the © symbol, and trademark symbols,™ for an unregistered trademark and ® for a registered trademark, where appropriate. They act as an early warning system to would-be infringers and will help the business when seeking to prove that a defendant knew about the right;
  • ensuring registered rights are used. Failure to do so can, in some cases, result in loss of protection;
  • ensuring any renewal fees for registered rights are paid on time, otherwise the business risks losing the protection of the registration; and
  • checking any brands licensed in from third parties, such as a registered trademark, are being used in accordance with the terms of that licence.

Exploiting a brand

A brand can be commercially exploited in a number of ways. The main methods are by:

  • a licence, which is an agreement that gives another business the right to use a brand for a defined period, for defined products or services, in a defined territory. Once the term has ended ownership and control of the brand returns to the original brand owner; and
  • an assignment, which is an agreement that sells a brand to another business. The original brand owner loses control of it but receives a lump sum in return.

Always take legal advice before allowing a third party to use the business’ brand either formally or informally. A written agreement governing use of the brand should always be signed if the business is entering into an agreement.

Put guidelines in place governing the use of the business’ brand by others, for example, subsidiaries, franchisees and distributors, and strictly enforce these guidelines. The business should monitor use and ensure adherence.

Enforcing a brand

A business can lose brand protection if individuals are allowed to use its brand on an unauthorised basis, however minor. Misuse of a business’ brand by others will also weaken its value. Businesses must therefore monitor infringement and actively pursue infringers by:

  • keeping accurate records of permitted third party use of brands, and monitor use to ensure adherence to the terms of any agreement;
  • having a system in place for reporting unauthorised use of the business’ brand or use of similar marks or brands;
  • making sure everyone understands the importance of reporting any misuse of the business’ brand, even if the use is for different goods or services to those the business sells; and
  • taking immediate legal advice if the business becomes aware of any misuse of its brand. Quick action can prevent damage to the brand and consequential sales losses.

Do not infringe other brands

Be very careful if your business uses another company’s brand in any of its marketing. For example, a business should not use another trader’s logo on its website to make it look like that trader has endorsed the business’ product.

A business can use a competitor’s brands in its own adverts, subject to certain restrictions. For example, if the business is comparing them with its own brand the business must not insult or denigrate its rival’s brand. Remember to take legal advice if your business is considering using a rival brand in any of its advertising.

If you need further legal advice about protecting your business brand, contact Martin de Ridder on 01543 431 186 or email Ansons Solicitors has offices in Cannock and Lichfield, Staffordshire.